USPTO Patents Application 10804616

App. No. 10/804,616

Amendment Dated: October 12, 2007

Reply to Office Action of My 12, 2007

REMARKS/ARGUMENTS
The claims have been amended as set forth above. No new matter has been added.
Applicants respectfully request reconsideration.

I. Examiner Interview Dated September 18, 2007

An interview was held on September 18, 2007. An agreement as to allowability was not
reached. Applicants believe that an agreement was reached that the current changes overcome
the cited references.

II. Rejection of the Claims

Claims 1-16, 18-42, and 44-47 are rejected under 35 U.S.C. 103(a) as being unpatentable
over U.S. Publication No. 2004/0021701 published to Iwema and assigned to Microsoft Corp. in
view of Microsoft Word. Claims 17 and 43 are rejected under 35 U.S.C. 103(a) as being
unpatentable over U.S. Publication No. 2004/0021701 published to Iwema and assigned to
Microsoft Corp. in view of U.S. Patent No. 6,683,600 issued to Lui and assigned to Microsoft
Corp. Applicants respectfully disagree with the above rejection. Independent claim 1 has been
amended to include the following combination of features that is not taught or suggested by the
cited references:

selecting an electronic pen for functioning as an electronic highlighter device;

engaging the electronic pen with a computer-displayed object;

in response to engaging the electronic pen with the computer-displayed object,
determining the height of the computer-displayed object; and

automatically setting the electronic ink height of the electronic pen to the
determined height.

The cited references do not teach or otherwise suggest the above combination of features.

Independent claim 20 has been amended to include the following combination of features that is

not taught or suggested by the cited references:

selecting an electronic input device for functioning as an electronic highlighter
device;

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Reply to Office Action of July 12, 2007

engaging the electronic highlighter device with a computer-displayed object;

in response to engaging the electronic highlighter device with the computer-
displayed object, determining the height of the computer-displayed object; and

automatically setting the electronic ink height of the electronic device to the
determined height.

The cited references do not teach or otherwise suggest the above combination of features.
Independent claim 45 has been amended to include the following combination of features that is
not taught or suggested by the cited references:

selecting an electronic pen for functioning as an electronic highlighter device;

engaging the electronic pen with a computer-displayed handwritten text selection;

determining the height of the computer-displayed handwritten text selection,
wherein determining the height of the computer-displayed handwritten text
selection includes at least one member of a group comprising: determining an
average height of the computer-displayed handwritten text selection without
considering the length of any ascending or any descending character segments of
any characters comprising the computer-displayed handwritten text selection, and
determining the height of the computer-displayed handwritten text selection based
on the maximum height of the computer-displayed handwritten text selection
including the length of any ascending or any descending character segments of
any characters comprising the computer-displayed handwritten text selection; and

setting the electronic ink height of the electronic pen to the determined height.

The cited references do not teach or otherwise suggest the above combination of features.
With regard to the dependent claims, they include features not taught or suggested by the cited
references. Furthermore, those claims ultimately depend from the independent claims set forth
above. As such, they should be found allowable for at least those same reasons.

III. Request For Reconsideration

In view of the foregoing amendments and remarks, all pending claims are believed to be
allowable and the application is in condition for allowance. Therefore, a Notice of Allowance is
respectfully requested. Should the Examiner have any further issues regarding this application,

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Amendment Dated: October 12, 2007

Reply to Office Action of July 12, 2007

the Examiner is requested to contact the undersigned attorney for the applicant at the telephone
number provided below.

Respectfully submitted,

Ryan T. Grace
Registration No. 52,956
Direct Dial: 206.342.6258

MERCHANT & GOULD P.C.
P. O. Box 2903

Minneapolis, Minnesota 55402-0903
206.342.6200

PATENT TRADEMARK OFFICE

27488

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